Overview
This role focuses primarily on trademark enforcement, supporting both domestic and international efforts to protect brand assets. The position also involves assisting with trademark prosecution and portfolio management.
Responsibilities
- Manage and support trademark enforcement activities including monitoring, domain name disputes, counterfeit reporting, online infringement, takedowns, and investigations of fraudulent trademark use
- Review trademark watch notices, analyze potential conflicts, and prepare summaries and recommendations for attorney review
- Assist attorneys in drafting and managing cease-and-desist letters and related enforcement correspondence
- Support Trademark Trial and Appeal Board (TTAB) proceedings such as oppositions and cancellations
- Gather and organize evidence related to use, infringement, and priority to support enforcement strategies
- Assist with Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints and domain name enforcement
- Coordinate with investigators, vendors, and foreign counsel on enforcement actions
- Maintain enforcement tracking systems and prepare status reports for client portfolios
- Assist with U.S. and foreign trademark prosecution matters including preparing and filing applications, Office Action responses, Statements of Use, and maintenance filings (Sections 8, 15, and renewals)
- Review specimens of use for compliance with USPTO requirements
- Communicate with foreign associates regarding filings, deadlines, and procedural requirements
- Support docket management including deadline tracking and participation in docket meetings
- Conduct preliminary trademark clearance searches
- Assist with assignment recordations and portfolio maintenance
- Prepare client reporting letters and trademark status updates
Qualifications
- Minimum of 5 years of experience as a Trademark Paralegal with significant exposure to enforcement matters
- Strong experience in enforcement activities including domain disputes, counterfeit reporting, online infringement, takedowns, and TTAB proceedings
- Working knowledge of U.S. and international trademark prosecution processes
- Strong analytical skills with the ability to assess risk and identify enforcement strategies
- Excellent written and verbal communication skills
- Highly organized with strong attention to detail and ability to manage multiple deadlines
- Ability to work independently and collaboratively within a legal team
- Proactive and solution-oriented with strong follow-through
- Comfortable working in a virtual or hybrid environment
- Familiarity with Madrid Protocol and WIPO procedures preferred
Minimum Requirements
- Bachelor's degree and/or equivalent relevant experience in intellectual property enforcement
Technical Skills
- Proficiency in Microsoft Outlook, Word, and Excel
- Experience with iManage or similar document management systems
- Familiarity with trademark docketing systems
- Experience with USPTO systems and global intellectual property databases
Compensation & Benefits
- Competitive salary commensurate with experience and qualifications
- Eligibility for discretionary year-end bonus and annual merit-based increases
- Comprehensive benefits package including medical, dental, vision, life, and disability insurance
- 401(k) retirement plan
- Paid time off
Location
This position supports virtual or hybrid work environments.